Assignment history

Inventors

• Geoffrey B. Rhoads: Digimarc Corp. (at the time of filing)

Original assignee

The original assignee, Digimarc Corp., is an operating company known for digital watermarking and other identification and authentication solutions. They have shipped products embodying the claims, specifically related to embedding imperceptible digital watermarks in various media. Digimarc Corp. is currently operating.

Assignment timeline

• 1995-07-27 (executed) / recorded 1995-07-27 — Reel 007055/0827

  • Conveyance: Assignment of Assignors Interest
  • Assignor: GEOFFREY B RHOADS
  • Assignee: PINECONE IMAGING CORPORATION
  • Correspondent: B. LILES ANDREWS, KLARQUIST SPARKMAN CAMPBELL ET AL, ONE WORLD TRADE CENTER, SUITE 1600, 121 S.W. SALMON STREET, PORTLAND, OREGON 97204
  • Context: Transfer from inventor to initial assignee.

• 1997-10-14 (executed) / recorded 1997-10-14 — Reel 008892/0640

  • Conveyance: Assignment of Assignors Interest
  • Assignor: PINECONE IMAGING CORPORATION
  • Assignee: DIGIMARC CORPORATION
  • Correspondent: B. LILES ANDREWS, KLARQUIST SPARKMAN CAMPBELL ET AL, ONE WORLD TRADE CENTER, SUITE 1600, 121 S.W. SALMON STREET, PORTLAND, OREGON 97204. This correspondent also appears on the previous assignment.
  • Context: Internal reorganization/acquisition, transfer from Pinecone Imaging to Digimarc.

• 2008-11-05 (executed) / recorded 2009-02-18 — Reel 022716/0925

  • Conveyance: Confirmation of Transfer of United States Patent Rights
  • Assignor: L-1 SECURE CREDENTIALING, INC. (FORMERLY KNOWN AS DIGIMARC CORPORATION)
  • Assignee: DIGIMARC CORPORATION (FORMERLY DMRC CORPORATION)
  • Correspondent: JAMES D. LOWE, DIGIMARC CORPORATION, 9405 S.W. GEMINI DRIVE, BEAVERTON, OREGON 97008
  • Context: Corporate name change/reorganization.

• 2010-05-12 (executed) / recorded 2010-05-24 — Reel 024925/0009

  • Conveyance: Merger
  • Assignor: DIGIMARC CORPORATION (A DELAWARE CORPORATION)
  • Assignee: DIGIMARC CORPORATION (AN OREGON CORPORATION)
  • Correspondent: B. LILES ANDREWS, KLARQUIST SPARKMAN, LLP, ONE WORLD TRADE CENTER, SUITE 1600, 121 SW SALMON ST., PORTLAND, OR 97204. This correspondent also appears on earlier assignments.
  • Context: Corporate merger/reorganization.

• 2010-09-14 (executed) / recorded 2010-09-28 — Reel 025595/0285

  • Conveyance: Merger
  • Assignor: DIGIMARC CORPORATION (AN OREGON CORPORATION)
  • Assignee: DIGIMARC CORPORATION (A DELAWARE CORPORATION)
  • Correspondent: B. LILES ANDREWS, KLARQUIST SPARKMAN, LLP, ONE WORLD TRADE CENTER, SUITE 1600, 121 SW SALMON ST., PORTLAND, OR 97204. This correspondent also appears on earlier assignments.
  • Context: Corporate merger/reorganization.

• 2010-10-29 (executed) / recorded 2010-11-03 — Reel 025732/0832

  • Conveyance: Assignment of Assignors Interest
  • Assignor: DIGIMARC CORPORATION (A DELAWARE CORPORATION)
  • Assignee: DMRC LLC
  • Correspondent: SUSAN B. KINNEY, DIGIMARC CORPORATION, 9405 S.W. GEMINI DRIVE, BEAVERTON, OR 97008
  • Context: Internal transfer.

• 2010-11-02 (executed) / recorded 2010-11-03 — Reel 025732/0830

  • Conveyance: Merger
  • Assignor: DMRC LLC
  • Assignee: DMRC CORPORATION
  • Correspondent: SUSAN B. KINNEY, DIGIMARC CORPORATION, 9405 S.W. GEMINI DRIVE, BEAVERTON, OR 97008. This correspondent also appears on the prior assignment.
  • Context: Corporate merger/reorganization.

• 2010-11-02 (executed) / recorded 2010-11-03 — Reel 025732/0828

  • Conveyance: Merger
  • Assignor: DMRC CORPORATION
  • Assignee: DIGIMARC CORPORATION
  • Correspondent: SUSAN B. KINNEY, DIGIMARC CORPORATION, 9405 S.W. GEMINI DRIVE, BEAVERTON, OR 97008. This correspondent also appears on the two prior assignments.
  • Context: Corporate merger/reorganization.

Timeline diagram

timeline
    title Ownership of US 5841978
    1995 : Filed by Digimarc Corp
         : Assigned to Pinecone Imaging Corp
    1997 : Assigned to Digimarc Corp
    1998 : Issued
    2008 : L-1 Secure Credentials to Digimarc Corp
    2010 : Digimarc DE to Digimarc OR
         : Digimarc OR to Digimarc DE
         : Digimarc DE to DMRC LLC
         : DMRC LLC to DMRC Corp
         : DMRC Corp to Digimarc Corp
    2013 : Expired

NPE / troll-pattern signals

1. Shell-entity transfer — not present. The transfers involve clearly identified operating companies and their related entities (e.g., Pinecone Imaging Corp. and Digimarc Corp., or various iterations of Digimarc). While DMRC LLC is mentioned, it appears to be an internal corporate entity rather than an external licensing shell.

2. Known asserter in the chain — not present. Digimarc Corp. is an operating company and is not identified on major NPE lists. The litigation identified in the summary involved Digimarc as the plaintiff, asserting against Verance Corp., also an operating company.

3. Repeat correspondent across the chain — present. B. Liles Andrews (Klarquist Sparkman Campbell et al. and Klarquist Sparkman, LLP) appears on multiple assignments: 1995-07-27 (Reel 007055/0827), 1997-10-14 (Reel 008892/0640), 2010-05-12 (Reel 024925/0009), and 2010-09-14 (Reel 025595/0285). Susan B. Kinney (Digimarc Corporation) also appears on multiple assignments: 2010-10-29 (Reel 025732/0832), 2010-11-02 (Reel 025732/0830), and 2010-11-02 (Reel 025732/0828).

4. Cascading transfers — present. There are three consecutive assignments within a few days in late 2010 (October 29 to November 2, 2010) involving Digimarc Corporation, DMRC LLC, and DMRC Corporation. These transfers share the same correspondent, Susan B. Kinney, and likely represent internal corporate restructuring.

5. Pre-litigation transfer — unclear. While the patent was involved in litigation, the specific transfer dates in relation to the initial filing dates of the lawsuits are not precise enough to confirm a pre-litigation transfer within a 6-month window. The identified litigation began in 2000 and 2001, while the corporate reassignments are from later dates.

6. Bankruptcy fire-sale — not present. The assignment records do not indicate any bankruptcy proceedings for the assignor entities.

7. Privateering — not present. The assignees in the chain are all directly related to Digimarc, an operating company that directly asserts its patents.

8. Defensive aggregator (anti-NPE) — not present. The chain does not terminate at any known defensive aggregators.

Verdict

Operating-company assertion. The assignment timeline clearly shows the patent remaining within entities related to Digimarc Corp., an operating company that manufactures and sells products embodying the claims. The identified litigation further confirms that Digimarc asserted this and related patents to protect its technology from competitors like Verance. The recurring correspondents and cascading transfers appear to be related to internal corporate reorganizations rather than transfers to shell entities for assertion purposes.

USPTO Assignment Center search: https://assignmentcenter.uspto.gov/patent/index.html